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Nov 20

RKD NewsNet November 2020 - Volume II

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Aboli Kherde, Adv. Sachi Kapoor & Adv. Shubham Borkar

General News

  • India: DPIIT to look after CGPDTM until further notice
  • International News

    India: DPIIT to look after CGPDTM until further notice

    The Order of the Department for Promotion of Industry and Internal Trade (DPIIT), dated November 11, 2020, states that the Joint Secretary of the DPIIT, shall be looking after the work of the Controller General of Patents, Designs, and Trade Marks (CGPDTM), from November 16, 2020 onwards. This Order will be effective and in force until the joining of the regular CGPDTM or until further orders are passed by the DPIIT in this regard.

    The current Joint Secretary of DPIIT, who has taken over as the acting CGPDTM is Shri. Rajendra Ratnoo, IAS.

    This Order comes in light of the recent letter of Shri. Om Prakash Gupta, Controller of CGPDTM, addressed to stakeholders, which included many law firms in India, as well as organizations such as ASSOCHAM, FICCI etc. stating that he has decided to move back to his cadre in Maharashtra. The Order is for the information of all stakeholders including, Indian Patent Office, IPR Sections, DPIIT (ERM) Section, EO, DoPT and many others.

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    Cancellation of trademark as a sanction against defendant

    SFM LLC (“SFM”) owns and operates retail grocery stores under the brand name and trademark SPROUTS since 2002. Corcamore LLC (“Corcamore”) owns a trademark registration for SPROUT with respect to vending machine services claiming use since 2008.

    SFM filed a petition2 with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) to cancel Corcamore’s registration for the mark SPROUT, stating that it was likely to be confused with its own registered trademark. During the course of the proceedings, it was observed by the TTAB that Corcamore was violating its interim orders/ sanction orders repeatedly and instead was filing numerous motions, several irrelevant to the case at hand. As a sanction order, the TTAB cancelled Corcamore’s trademark registration.

    In view of the cancelled trademark registration, Corcamore appealed to the United States Court of Appeals for the Federal Circuit (Federal Circuit Court). Corcamore, inter alia, argued that SFM did not have a standing to file for cancellation of Corcamore’s trademark and that the Board abused its discretion in cancelling its trademark as a sanction.

    With respect to whether SFM had standing to sue Corcamore, the Court applied the principles laid down in Lexmark3 and Empresa Cubana4 , and observed that the standing is dependent upon the “zone of interest” or “real interest” of the plaintiff in the case. It observed that before dismissing a plaint, the courts are to see if the plaintiff’s “interests” in the suit are inconsistent with the intent of the statute. It went further and stated that there should be legitimate commercial interests of the plaintiff to support its claim for cancellation.

    The Court observed that SFM’s allegations of confusion amongst consumers between its own mark SPROUTS and Corcamore’s mark SPROUT were sufficiently pleaded to justify “real interest” in cancellation. This is further strengthened by the fact that the goods/ services in which both parties deal are reasonably similar. Thus, it was held that SFM had standing to apply for the cancellation.

    With respect to the second issue, that is, whether TTAB had abused its discretionary power in cancelling the mark, as a sanction against Corcamore’s non-cooperative actions during the proceedings, the Circuit Court held that considering the multiple times Corcamore failed to adhere to the orders of TTAB, failed to appear in the TTAB conference proceedings, and also failed to serve discovery responses and prove its bona fide efforts resolving disputes in the proceedings, the TTAB had not usurped its power in cancelling the registration for its trademark. As observed by the Federal Circuit Court in its judgment, “The Board recognized that Corcamore engaged in willful, bad-faith tactics, frustrated SFM’s ability to advance its case, and taxed Board resources. Consequently, the Board entered a default judgment against Corcamore and ordered that Corcamore’s registration “be cancelled in due course.”

    2Corcamore, LLC v. SFM, LLC, Case No. 19-1526 (Fed. Cir. Oct. 27, 2020) (Reyna, J.)

    3 Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014)

    4Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014),

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    Merely playing around with the spelling of a word, cannot render it to be distinctive!

    What would you, as a reader, relate the word ‘Cannubis’ to? Did you think of ‘Cannabis’ too?!

    An individual filed a trademark application for the wordmark ‘Cannubis’ bearing Application No. 018048487 at the EUIPO in the following classes for the respective goods:

    Class 3 — Toiletries;

    Class 5 — Dietary supplements;

    Class 30 — Coffee, teas and cocoa and substitutes therefor;

    Class 32 — Non-alcoholic beverages.

    The Application was ‘Objected’ to by the Examiner stating that the mark applied for was an obvious misspelling of the word ‘Cannabis’ and the targeted consumers will be misled into believing that the products bearing the mark contain some element of ‘Cannabis’. The Examiner concluded that since the mark applied for is directly associated to the natural substance ‘Cannabis’, it is descriptive in nature and is thus not registrable under Article 7(1)(b) of the European Union Trademark Regulation (EUTMR) which refers to the ‘Absolute grounds of Refusal’. (Article 7(1)(b): trademarks which are devoid of any distinctive character.)

    The Applicant filed an appeal against the Examiner’s decision with the following arguments:

    1. that the phonetic similarities drawn by the Examiner were not tenable;

    2. that the word ‘Cannubis’ has no meaning of its own and is thus inherently distinctive;

    3. that ‘Cannubis’ is a word which is a combination of the words ‘CANNABIS’ and ‘Anubis’ (the old Egyptian term for skull forming and mummification); and

    4. The Applicant also cited prior marks in the Register which could have been considered to be similar to ‘Cannabis’ but were not: Cannabin, Cannabia, Cannabi.

    The Appeal Board however, was not convinced with the arguments put forth by the Applicant. It particularly stated that the argument relating to the mark applied for being a combination of the words ‘Cannabis’ and ‘Anubis’ is a far-fetched reference and the public at large in the present times will not establish such a connection. The Appeal was thus refused.

    *Reference from*///number/R2651%2F2019-1.

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    Choose your movies and also their endings!

    Movie making or story telling has embarked upon a new dimension, as movies and web-series explore user-interactive content. This new form of story-telling explores films and books wherein the users can “choose” the way their story proceeds until finality.

    Netflix was the first to explore this avenue with its 2018 immersive film Black Mirror: Bandersnatch (2018). The movie interacts with the users and allows them to decide the climax depending upon the choices they make. Chooseco LLC is a publishing company that publishes children’s story books which are interactive. Chooseco owns a federally registered trademark for the word mark “CHOOSE YOUR OWN ADVENTURE”. This mark covers various types of media including books and movies.

    Chooseco had filed a suit against Netflix in 2018 for trademark infringement at the District Court in Vermont, US as Netflix used its registered phrase in its film Bandersnatch. It claimed $25 million as damages! Later, Chooseco also claimed that the fictional publication Tuckersoft, which was inspired by the trade dress and overall look of its publication of “Choose Your Own Adventure” book series. Netflix prayed for dismissal of this suit, stating that the phrase was generic and descriptive, hence amounting to fair use.

    The Court ruled, "Netflix used Chooseco’s mark to describe the interactive narrative structure shared by the book, the videogame, and the film itself. "The protagonist in Bandersnatch explicitly stated that the fictitious book at the center of the film’s plot was a 'Choose Your Own Adventure' book. In addition, the book, the videogame, and the film itself all employ the same type of interactivity as Chooseco’s products. The similarity between Chooseco’s products, Netflix’s film, and the fictitious book Netflix described as a 'Choose Your Own Adventure' book increases the likelihood of consumer confusion."

    Recent reports suggest that the parties have decided to settle the dispute in November 2020, however, the terms of the settlement remain undisclosed.

    With the easy accessibility and coagulation of ideas and works of people from all over the world, intermingling of art forms and art cultures is increasing. Books are made into movies, movies into plays, plays into poems and so on… It is often seen that due credit is not given in works which are adaptation, inspired by, or derived from other works. This creates copyright hassles sooner than later. As an artist or even a broadcaster/ publisher, one must be vigilant as to the works which are involved in the formation of their own work.

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    Walmart fizzled out of trademark dispute

    In August 2020, we shared with our readers, the case of “Parle’s Appy Fizz v. Walmart’s Fizzy Apple”. It can be accessed here. In this case, Parle Agro Pvt. Ltd. (Parle), filed a suit against Walmart for protecting its trademark “Appy Fizz” at the Bombay High Court. It stated that Walmart’s mark “Fizzy Apple” was deceptively similar to its mark “Appy Fizz”, and allowing Walmart to use it would cause confusion amongst the members of the public with respect to the source of the products. Both Appy Fizz and Fizzy Apple are being used with respect to packaged apple juice. The Court had granted an interim injunction against Walmart restraining it from using the mark until further orders.

    Recent news reports suggest, that on November 06, 2020, Walmart has decided to refrain from using the mark “Fizzy Apple” at all. The same was reportedly recorded by the Court as an undertaking.

    In trademark disputes, it is important to establish, the goodwill and reputation of one’s brand in the relevant markets; which Parle succeeded in establishing. In this case, along with the deceptively similar trade name, the similarity in the layout, colour scheme adopted on the labels, and the like; also made a strong case of deceptive similarity and trademark infringement.

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    Clash of Marts

    Indiamart and Justdial are e-commerce market places where vendors, distributors, dealers can connect with other businesses for selling their products and services. Both platforms are popular in India. Indiamart InterMesh Ltd. (Indiamart) has reportedly filed a copyright infringement suit1 against Just Dial Ltd. (Justdial) before the Delhi High Court for allegedly copying the website compilations from Indiamart’s E-commerce website. Indiamart has also accused Justdial of copying its data and cyber-squatting.

    The Delhi High Court has passed an ex-parte temporary injunction against Justdial on November 11, 2020 and also appointed local commissioners to conduct searches in Justdial’s premises to make an inventory of all the copies of the database on its website, and mobile application regarding the launch of the proposed JD Mart website. Justdial is yet to make an appearance before the Court, but has stated that it is in the process of developing a beta version of the website and the official launch of the website would take place after seeking legal recourse. Watch this space for further updates.


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    Hidden Meanings in Trademarks

    Wings on Drinks: Red Bull

    Some logos have hidden stories in them. Red Bull, the famous energy drink is one such example. Red Bull was earlier known as Krating Daeng, and originated in Thailand. It was a local drink (something like lemonade in India) and popular amongst the working class for its instantly energizing quality. It was relied upon by industrial workers and drivers who had to work for long hours. Krating Daeng itself means Red Bulls! The brand was taken to a global level when Austrian entrepreneur Dietrich Mateschitz tried it during his visit to Thailand. He kept the logo of the bulls and only changed the name to Red Bull for global recognition.

    The brand also adopted the slogan “Gives you Wings” which signifies the instant energy that it gives to the consumer!

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